The Toronto-Dominion Bank v. Lorna Kang
Claim Number: FA0303000150816
Complainant is The Toronto-Dominion Bank, Toronto, ON, CANADA (“Complainant”) represented by Peter W. Choe, of Gowling
Lafleur Henderson LLP. Respondent is
Lorna Kang, Perak, MALAYSIA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwwtdcanadatrust.com>,
registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com.
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in serving as Panelist in this
proceeding.
Judge
Harold Kalina (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on March 20, 2003; the Forum received a hard copy of the
Complaint on March 21, 2003.
On
March 21, 2003, Iholdings.Com, Inc. d/b/a Dotregistrar.Com confirmed by e-mail
to the Forum that the domain name <wwwtdcanadatrust.com>
is registered with Dotregistrar.Com and that Respondent is the current
registrant of the name. Dotregistrar.Com has verified that Respondent is bound
by the Dotregistrar.Com registration agreement and has thereby agreed to
resolve domain-name disputes brought by third parties in accordance with
ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
March 24, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 14, 2003 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@wwwtdcanadatrust.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
April 23, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the Forum has discharged its responsibility under
Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy
(the "Rules") "to employ reasonably available means calculated
to achieve actual notice to Respondent."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's
Supplemental Rules and any rules and principles of law that the Panel deems
applicable, without the benefit of any Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wwwtdcanadatrust.com> domain name is confusingly similar to
Complainant’s TD and CANADA TRUST marks.
2. Respondent does not have any rights or
legitimate interests in the <wwwtdcanadatrust.com>
domain name.
3. Respondent registered and used the <wwwtdcanadatrust.com> domain
name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, the
Toronto-Dominion Bank, is a bank chartered under the laws of Canada that
conducts business under the shortened TD Bank moniker. Complainant is one of
Canada’s largest financial institutions and has provided financial services to
Canadians for almost 150 years.
Complainant and
its affiliated companies are owners of the TD and CANADA TRUST marks, and
operate their banking business using the TD CANADA TRUST mark. In addition to
the common law rights of TD Bank and its affiliates, the Canadian Intellectual
Property Office (“CIPO”) has issued Complainant the following registrations for
its marks, inter alia: TMA 396,087
for the TD mark registered on March 20, 1992; and TMA 409,300 for the CANADA
TRUST mark registered on March 12, 1993.
Additionally,
besides representing itself to the banking public using its TD and CANADA TRUST
marks, Complainant’s main website is located at <tdcanadatrust.com>.
Complainant’s domain name and corresponding website have received several
awards for excellence and have acquired substantial goodwill in the online
banking industry.
Respondent,
Lorna Kang, registered <wwwtdcanadatrust.com>
on November 23, 2001. Complainant’s investigation of Respondent indicates that
the subject domain name resolves to <gotoo.com/treasure/finance.html>,
where links to various websites (including <adultsingles.com> and
<ancestry.com>), as well as pop-up advertisements, appear.
Complainant’s
investigation also reveals that Respondent habitually registers domain names
that infringe on others’ marks, and has been labeled a “typosquatter” in
another dispute decided under the Policy. Vanguard
Group, Inc. v. Kang, D2002-1064 (WIPO Jan. 20, 2003).
Paragraph 15(a)
of the Rules instructs this Panel to "decide a complaint on the basis of
the statements and documents submitted in accordance with the Policy, these
Rules and any rules and principles of law that it deems applicable."
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
Paragraph 4(a)
of the Policy requires that Complainant must prove each of the following three
elements to obtain an order that a domain name should be cancelled or
transferred:
(1) the domain name registered by Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has rights; and
(2) Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and
is being used in bad faith.
Complainant has
established rights in the TD and CANADA TRUST marks by registering its marks
with CIPO, and subsequent continuous use of the marks in commerce. See Koninklijke KPN N.V. v. Telepathy Inc.,
D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that
the mark be registered in the country in which a Respondent operates. It is sufficient that a Complainant can
demonstrate a mark in some jurisdiction).
Respondent’s <wwwtdcanadatrust.com> domain
name is confusingly similar to Complainant’s TD and CANADA TRUST marks.
Respondent’s actions constitute typosquatting, where a common typographical
error, such as deletion of the “.” after the “www” introduction, is
incorporated into an established mark. Additionally, Respondent’s domain name is
a combination of Complainant’s registered marks, and seeks to emulate
Complainant’s successful <tdcanadatrust.com> domain name. The mere
combination of Complainant’s marks in a domain name fails to overcome a
confusingly similar analysis under the Policy. See Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000)
(finding confusing similarity where Respondent combined Complainant’s POKEMON
and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also Bank of Am. Corp. v. InterMos,
FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name
<wwwbankofamerica.com> is confusingly similar to Complainant’s registered
trademark BANK OF AMERICA because it “takes advantage of a typing error
(eliminating the period between the www and the domain name) that users
commonly make when searching on the Internet”).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
presented a prima facie case before
the Panel, comprised of evidence supporting its assertions and inferences.
Because Respondent did not submit a Response in this proceeding, it has failed
to propose any set of circumstances that would suggest it has rights or
interests in the <wwwtdcanadatrust.com>
domain name under Policy ¶ 4(a)(ii). Complainant’s assertions have gone
unopposed and unrefuted. Therefore, it is proper for the Panel to accept all
reasonable inferences made by Complainant as true, unless clearly contradicted
by the evidence. See Vertical Solutions
Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31,
2000) (holding that Respondent’s failure to respond allows all reasonable
inferences of fact in the allegations of Complaint to be deemed true); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that
Respondent has no rights or legitimate interests with respect to the domain
name, the burden shifts to Respondent to provide credible evidence that
substantiates its claim of rights and legitimate interests in the domain name).
Unrefuted
evidence indicates that Respondent’s domain name resolves to an unrelated
website, located at <gotoo.com/treasure/finance.html>, where links to
various websites as well as pop-up advertisements appear. Based on the content
of the third-party websites, Respondent is presumed to benefit monetarily from
its use of Complainant’s marks in its domain name. As stated, Respondent’s
activities constitute “typosquatting,” and as such, fail to establish rights or
legitimate interests in the domain name under Policy ¶¶ 4(c)(i) or (iii). See Black & Decker Corp. v. Azra Khan,
FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding no rights or legitimate
interests where Respondent used the typosquatted <wwwdewalt.com> domain
name to divert Internet users to a search engine webpage, and failed to respond
to the Complaint); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114
(D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting
the domain names was to cause confusion with Complainant's website and marks,
its use of the names was not in connection with the offering of goods or
services or any other fair use).
Respondent
has never carried on business under the domain name’s “wwwtdcanadatrust”
second-level domain. Further, Respondent is not authorized or licensed to make
use of Complainant’s TD and CANADA TRUST marks in the domain name. The
nonsensical nature of the domain name makes it unlikely that Respondent has
rights or legitimate interests in <wwwtdcanadatrust.com>
under the Policy. Respondent’s diversionary use of the domain name and pattern
of typosquatting suggest Respondent is not commonly known by the domain name
under Policy ¶ 4(c)(ii). See MRA
Holding, LLC v. Costnet,
FA 140454 (Nat. Arb. Forum Feb. 20, 2003) (noting that “the disputed domain name does not even correctly
spell a cognizable phrase” in finding that Respondent was not “commonly known
by” the name GIRLS GON WILD or <girlsgonwild.com>); see also Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interest where Respondent was not commonly known by the mark and
never applied for a license or permission from Complainant to use the
trademarked name).
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s bad
faith registration and use of the domain name is articulated under Policy ¶
4(b)(iv). More specifically, a variety of circumstances indicate that
Respondent intends to divert unsuspecting Internet users from Complainant’s
website for commercial gain. As previously mentioned, Internet users attempting
to access Complainant’s website who neglect to separate the “www” world-wide-web
identifier from the “tdcanadatrust” second-level domain, will be directed to
Respondent’s website. Respondent’s website contains various advertisements and
hyperlinks to third-party websites and their related services. Respondent’s use
of the domain name is misleading and confusing, and depreciates the goodwill
associated with Complainant’s TD and CANADA TRUST marks. Therefore,
Respondent’s use of the <wwwtdcanadatrust.com>
domain name constitutes bad faith registration and use under the Policy. See Kmart v. Kahn, FA 127708 (Nat. Arb.
Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary
use of Complainant's mark when the domain name resolves to commercial websites
and Respondent fails to contest the Complaint, it may be concluded that
Respondent is using the domain name in bad faith pursuant to Policy ¶
4(b)(iv)); see also Am.
Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21,
2000) (finding bad faith where Respondent registered and used an infringing
domain name to attract users to a website sponsored by Respondent).
Additionally,
Respondent’s registration of the <wwwtdcanadatrust.com>
domain name, incorporating Complainant’s marks, was done with actual knowledge
of Complainant’s rights in the marks, thus evidencing bad faith. The practice
of typosquatting, of itself, has been determined to evidence bad faith under
the Policy because it represents numerous harms the Policy seeks to address
(e.g., intentional trademark infringement, unauthorized capitalization of
another’s goodwill, and opportunistic exploitation of another’s mark, among
others). See Nat’l Ass’n of Prof’l Baseball
Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is
the intentional misspelling of words with intent to intercept and siphon off
traffic from its intended destination, by preying on Internauts who make common
typing errors. Typosquatting is
inherently parasitic and of itself evidence of bad faith”); see also Medline, Inc. v. Domain Active Pty.
Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (stating that “in
typosquatting cases, such as this one, it would be difficult for Respondent to
prove to the Panel that it did not have actual knowledge of Complainant’s
distinctive MEDLINE mark when it registered the infringing
<wwwmedline.com> domain name”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <wwwtdcanadatrust.com>
domain name be TRANSFERRED from
Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
April 28, 2003
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